Aspects to Consider for Maintaining Protection of an Industrial Property Right Post Granting

Propiedad Industrial

Aspects to Consider for Maintaining Protection of an Industrial Property Right Post Granting

If we ask ourselves what it is that an applicant is seeking by applying for a registration before the Mexican Patent and Trademark Office ("IMPI", for its abbreviation in Spanish), the answer would obviously be acquiring protection for his/her intellectual creations.

To this end, the applicant invests both time, as well as funding, given that as we well know, the procedures before IMPI are not always necessarily simple.

Normally, an applicant seeks advice from an intellectual property attorney, who would be charged with following up with the timely prosecution, through the granting of a patent, utility model, industrial design, trademark and commercial slogan among other figures protected under the Industrial Property Law.

To the effect, once having undertaken the corresponding procedure, and upon receipt of the title, applicant assumes that his rights are duly protected. Notwithstanding, it is not always entirely true, given that applicant must meet a series of requirements to be able to preserve them and be able to enforce them should the need arise.

Among others, such as the payment of annuities, as is the case in patents, article 229 of the Industrial Property Law states:

"Article 229- To be able to exercise civil and penal actions arising from violations of industrial property rights, as well as for the adoption of measures foreseen in Article 199 BIS of this Law, it will have been necessary that the title holder would have applied to the products, containers or packages of the products protected by an industrial property right, the labeling and legends referenced in articles 26 and 131 of this Law or by any other means have stated or made public knowledge that the products or services are protected by an industrial property right.

This requirement will not be enforceable in cases of administrative infractions which do not imply a violation of an industrial property right. "

From reading this precept, it is surmised that should the labeling and legends referred to in articles 26 and 131 of the Law, not have been included, that is, mentioning that the patent is pending or that it was already granted, or in the case of trademarks, the legend "registered trademark, the initials "M.R." (in Spanish) or the inclusion of the ® symbol; then the sanctions established in various provisions would not be applicable.

The scope of this precept is questionable given that the "punishment" of not being able to apply the mentioned actions by the simple act of not having included any of the referred to legends, ends up being completely disproportional, which would contradict that which was established in Article 22 of our Magna Carta which warns that the severity of a penalty must be proportional to the unlawful act committed and the degree to which is affected to the protected legal right.

On the other hand, if a legend is indeed included, but not in reality no right to do so exists, then there would be an assumption of an administrative infraction, which leads to a possible economic sanction against the offender.

The above, makes it further more unfair that as a consequence of a simple omission by the owner who is not boasting of having a right, despite de facto having said right, ends up not being able to benefit from applying an economic sanction against a third party who takes advantage of the industrial property right of the owner.

It would seem that the system is structured so that those who invest in technology would be forced to take all the necessary measures to sue an offender, rather than an offender taking all necessary measures so as to not infringe
From the above, we conclude that perhaps the simplest measure would be that the authorities were to include in the registration title an express mention of the burden of the inclusion of the multi-cited legends, so that the owner would then be fully conscious of it, in order to be able to later protect his industrial property rights, should it become necessary. This would avoid having to resort to measures such as publication in a national newspaper making it known that his products or services are found duly protected by industrial property rights, in order to be able to request an infraction against a third party.

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